Verint Assistant GC Senior IP Counsel 

United States, Oregon 

567437326

Principal Duties and Essential Responsibilities:

• Manage a patent portfolio of approximately 700 patents and applications worldwide, as well as assist Marketing in managing Verint’s trademark portfolio
• Work with Verint’s inventors and IP committee to identify, harvest, prioritize, and develop the company’s existing and future IP assets
• Understand Verint’s business, strategy, and existing IP portfolio to effectively determine which IP assets to pursue, which not to pursue, and which to prune, across Verint’s technologies and geographies.
• Manage several outside patent, trademark, and FOSS counsel, as well as other external IP service providers, including ensuring the quality, speed, and efficiency of their work, as well as the department’s IP budget
• Oversee patent and trademark prosecution and evaluate the preparation of applications and office action responses.
• Prepare and maintain the department’s IP budget as well as reports on IP holdings and performance.
• Manage and enhance Verint’s FOSS policy and procedures relative to both use and contribution, including monitoring compliance with attribution and other requirements and implementing automation where appropriate
• Negotiate key inbound/outbound patent license and technology agreements when and as needed
• Evaluate and risk-assess, and manage existing and potential future outbound patent or other IP licensing opportunities
• Support the enforcement of Verint’s IP rights against, and the company’s defense against any infringement claims by, third parties; manage other IP-related litigation in the U.S. and abroad
• Oversee patent infringement analyses, focusing on NPE assertions and responses
• Evaluate and advise on IP risks and opportunities in M&A transactions and other strategic initiatives, including IP M&A due diligence
• Review marketing materials, press releases, and other published materials for IP issues and to protect company IP rights, including website review and domain name management
• Provide legal advice on IP matters to other members of the legal departments as well as to the engineering, marketing, and other business teams, including with respect to customer contracts, procurement contracts, and licensing agreements
• Develop, maintain, and administer corporate IP policies, training materials, and compliance

Minimum Requirements:

• JD from an accredited US law school
• Admitted to a State Bar and the United States Patent and Trademark Office (USPTO)
• 10 years of IP management experience in a combination of global operating companies (preferably software or technology companies) and nationally recognized law firms, including responsibility for IP strategy, patent prosecution, patent litigation, patent portfolio management and operations, IP counseling, IP licensing and litigation, and FOSS use and compliance.
• Highly developed analytical, communications, collaboration and leadership skills
• Creative, “out-of-the-box” thinker, with high integrity and excellent judgment
• Ability to work independently, comfortable with remote working environment
• Ability to effectively manage and communicate with geographically distributed teams in NA, EMEA, and APAC
• Successful completion of a background screening process including, but not limited to, employment verifications, criminal search, OFAC, SS Verification, as well as credit and drug screening, where applicable and in accordance with federal and local regulations

Preferred Requirements:

• Experience with software engineering, software licensing, and cloud / SaaS and associated IP considerations